`ESTTA1002275
`09/16/2019
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`
`AM GENERAL LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`09/15/2019
`
`105 NORTH NILES AVE.
`SOUTH BEND, IN 46617
`UNITED STATES
`
`CHARLENE M. KROGH/EVAN P. EVERIST
`DORSEY & WHITNEY LLP
`1400 WEWATTA STREET, SUITE 400
`DENVER, CO 80202-5549
`UNITED STATES
`docketing-dv@dorsey.com, krogh.charlene@dorsey.com, ever-
`ist.evan@dorsey.com
`303-629-3400
`
`Applicant Information
`
`Application No
`
`88222875
`
`Publication date
`
`03/19/2019
`
`Opposition Filing
`Date
`
`Applicant
`
`09/16/2019
`
`Polaris Industries Inc.
`2100 Highway 55
`Medina, MN 55340
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`09/15/2019
`
`Goods/Services Affected by Opposition
`
`Class 012. First Use: 2015/11/17 First Use In Commerce: 2015/11/17
`All goods and services in the class are opposed, namely: Off-road, side-by-side recreational vehicles
`excluding specifically tires
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2748387
`
`Registration Date
`
`08/05/2003
`
`Application Date
`
`12/13/2001
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Word Mark
`
`Design Mark
`
`AM GENERAL
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 037. First use: First Use: 1994/12/31 First Use In Commerce: 1994/12/31
`automobile repair, maintenance and servicing; repair, rebuilding, reconditioning,
`replacement and servicing of automobile engines, parts thereof and accessories
`thereto; information services in the field of automobile care, service, mainten-
`ance and repair
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`Application Date
`
`NONE
`
`NONE
`
`NONE
`
`AM GENERAL
`
`Vehicles, servicing and maintenance of vehicles, and sales of
`vehicles
`
`Attachments
`
`76348470#TMSN.png( bytes )
`Notice of Opposition - GENERAL.pdf(96806 bytes )
`
`Signature
`
`/Charlene M. Krogh/
`
`Name
`
`Date
`
`Charlene M. Krogh, CO Bar member since 2004 #35959
`
`09/16/2019
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of U.S. Trademark Application Serial No. 88222875 for the mark GENERAL
`Published on March 19, 2019
`
`)
`AM General LLC
`)
`
`)
` Opposer,
`)
`
`)
` v.
`)
`
`)
`Polaris Industries Inc.
`)
`
`)
` Applicant.
`______________________________________________________________________
`
`Opposition No.
`
`
`
`
`
`NOTICE OF OPPOSITION
`______________________________________________________________________
`
`AM General LLC, a Delaware limited liability company having an address of 105 N.
`
`Niles Avenue, South Bend, Indiana 46617 (“Opposer”), believes it will be damaged by the
`
`registration of the mark GENERAL (the “Mark”) shown in Application Serial No. 88222875 (the
`
`“Application”), filed by Polaris Industries Inc. (the “Applicant”) on December 10, 2018, and
`
`having been granted an extension of time to oppose until September 15, 2019 (extended to
`
`September 16, 2019 under 37 C.F.R. § 2.196), hereby opposes the same.
`
`As grounds of opposition, Opposer alleges the following:
`
`1.
`
`Opposer is now, and has for many years, been engaged in design, manufacture,
`
`supply, and support of high-quality specialized vehicles for military and commercial customers.
`
`2.
`
`Related to its goods and services, Opposer uses the mark AM GENERAL in
`
`connection with, among other things, vehicles, servicing and maintenance of vehicles, and sales
`
`of vehicles. All of the foregoing goods and services are referred to herein as “Opposer’s Goods
`
`and Services.”
`
`4852-2033-9365\2
`
`
`
`
`Serial No.: 88222875
`Mark: GENERAL
`Page: 2
`
`
`
`3.
`
`Opposer has used the mark AM GENERAL continuously in U.S. commerce in
`
`connection with Opposer’s Goods and Services since at least as early as 1944 and, as a result,
`
`Opposer has acquired common law rights to the mark AM GENERAL.
`
`4.
`
`In addition to its common law rights, Opposer is the owner of incontestable
`
`United States trademark registration number 2748387 for the mark AM GENERAL for the
`
`services “mobile repair, maintenance and servicing; repair, rebuilding, reconditioning,
`
`replacement and servicing of automobile engines, parts thereof and accessories thereto;
`
`information services in the field of automobile care, service, maintenance and repair” in
`
`International Class 37 registered on August 5, 2003 (“Opposer’s Registration”).
`
`5.
`
`Opposer has expended substantial amounts of money, time and effort in
`
`advertising, promoting and popularizing Opposer’s AM GENERAL mark so that the relevant
`
`public and consumers have come to know and recognize Opposer’s Goods and Services branded
`
`under the AM GENERAL mark as originating with Opposer. Opposer derives substantial
`
`goodwill and value from the aforesaid recognition, association and identification by consumers,
`
`the industry, and the trade.
`
`6.
`
`Opposer’s rights are valid, subsisting, and in full force and effect. Opposer has
`
`used the mark AM GENERAL continuously since its adoption and has not abandoned the mark.
`
`7.
`
`Applicant filed the Application on December 10, 2018, for the mark GENERAL
`
`for use in connection with “off-road, side-by-side recreational vehicles excluding specifically
`
`tires” in International Class 12 The Application was filed under § 1(a) of the Lanham Act, 15
`
`U.S.C. § 1051(a), with a claimed first-use date of November 17, 2015.
`
`
`Opposer’s Ref. M281662 ~ 509501-5
`4852-2033-9365\2
`
`
`
`
`Serial No.: 88222875
`Mark: GENERAL
`Page: 3
`
`
`
`8.
`
`On information and belief, Opposer’s rights in the mark AM GENERAL predate
`
`both the filing of the Application and any use of the Mark by Applicant. Opposer therefore has
`
`priority.
`
`9.
`
`Applicant’s GENERAL mark is confusingly similar to Opposer’s AM GENERAL
`
`mark. The marks both contain the term GENERAL and differ only by two letters.
`
`10.
`
`The goods identified in the Application are identical, highly related, and
`
`complementary to the Opposer’s Goods and Services and the services covered by Opposer’s
`
`Registration and are likely to be advertised and sold in the same markets through the same
`
`channels of trade.
`
`11.
`
`Applicant’s use and registration of the Mark in connection with the goods in the
`
`Application are likely to cause confusion, to cause mistake, or to deceive, with respect to
`
`Opposer’s rights, and a registration for the Mark will support and assist Applicant in the
`
`confusing and misleading use of the Mark, and will give color of exclusive statutory rights to
`
`Applicant, all with consequent injury and damage to Opposer and the public.
`
`12.
`
`Accordingly, Applicant is not entitled to registration of the Mark pursuant to
`
`§ 2(d) of the Lanham Act, 15 U.S.C. §1052(d).
`
`WHEREFORE, Opposer believes that it will be damaged by registration of Applicant’s
`
`Mark and prays that this Notice of Opposition be sustained and that the registration sought by
`
`Applicant be denied.
`
`
`Opposer’s Ref. M281662 ~ 509501-5
`4852-2033-9365\2
`
`
`
`
`Serial No.: 88222875
`Mark: GENERAL
`Page: 4
`
`
`Dated: September 16, 2019
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`DORSEY & WHITNEY LLP
`
`By: /Charlene M. Krogh/
`Charlene M. Krogh
`Evan P. Everist
`1400 Wewatta Street, Suite 400
`Denver, Colorado 80202-5549
`Tel: (303) 629-3400
`Fax: (303) 629-3450
`krogh.charlene@dorsey.com
`everist.evan@dorsey.com
`
`
`
`ATTORNEYS FOR OPPOSER
`
`
`Opposer’s Ref. M281662 ~ 509501-5
`4852-2033-9365\2
`
`